A Trademark Assignment is a document that transfers the ownership of a trademark from one party to another. It moves the rights and interest of the trademark from the owner to the recipient.

A Trademark Assignment is also known as a:

• Trademark assignment agreement
• Trademark transfer agreement
• Assignment of trademark

Some terms that are important to know:

• The assignor owns the trademark and is transferring it. They can be a person or organization.
• The assignee is the recipient of the trademark. This can be a person or an organization.
• A trademark is a form of intellectual property. It is a mark used to identify or distinguish goods. The mark can be a word, a phrase, a design, or a symbol.
• A service mark is a form of intellectual property, very similar to a trademark. Where a trademark is used to identify goods, a service mark is used to identify or distinguish services.

Use a Trademark Assignment when you’re looking to transfer your ownership of a trademark or a service mark to someone else. A Trademark Assignment can transfer both registered and unregistered trademarks.

You can use a Trademark Assignment in any of the following situations:

• If you’re selling the trademark, you can transfer the ownership of the mark to the buyer.
• After a business sale, you can sell or transfer the trademark of your business to the new owners. 
• If you have started a new business, you can use a Trademark Assignment to transfer a trademark from your old business to the new one. 
• You can transfer a trademark to someone without payment in return, as a gift or consideration.

If you’re looking to assign a trade name, use an Assignment of Trade Name. If you need to assign a contract, personal property, or a different form of intellectual property, use a general Assignment.

Where licensing permits the use of a trademark, an Assignment transfers the ownership entirely. A license means that you are still the owner of your trademark, with all the rights attached, and you’re simply letting someone else use your trademark temporarily. An Assignment is a permanent solution that transfers all the rights of ownership to someone else. 

Having to register a Trademark Assignment depends on whether a trademark is registered in the first place. Let’s break it down:

• Registered trademarks (federal): If you’re assigning a trademark that is registered at the federal level, register the transfer of ownership with the United States Patent and Trademark Office (USPTO). 
• Registered trademarks (state): If the trademark is registered at the state level, register the transfer with the state trademark or registry office.
• Unregistered trademarks: If your mark is unregistered, you don’t have to register the transfer. An unregistered trademark can still be protected by common law, but registering a trademark will offer exclusive rights that can help protect the brand.

A Trademark Assignment often contains a section of representations and warranties.

A representation means a statement of fact, while a warranty means a guarantee. The representations and warranties section contains facts that the assignor guarantees are true.

When creating a Trademark Assignment, you can choose which ones of the following representations and warranties to include. If you choose to include any representations and warranties it means that you guarantee these are factual statements at the time of signing.

Follow these steps to create your Trademark Assignment:

1. Give details on all parties

   Include information on the assignor and the assignee. You will need to include full names and addresses for all parties. You can add multiple assignors and assignees.

2. Include information on the trademark

   Describe the trademark that is being transferred. You will need to:

   • Clarify if the mark is a trademark or a service mark.
   • Describe the mark. If it is a word or phrase, spell it out as it’s used. If it’s a design or symbol, include a picture.
   • Include the registration number and name of the registry, if the mark is registered. If the mark is not registered, name the geographical area it has been used in. If the mark is currently pending registration, name where it will be registered in the future.

3. Set the price

   Name the price of the mark and when it will be paid.

4. Include representations and warranties

   Choose which representations and warranties to include. Choose only the ones you can guarantee are factual at the time of signing.

5. Date and sign

   Set a date to sign the Trademark Assignment. Both parties should date and sign the document.

Notarizing a Trademark Assignment can be beneficial because a notary public can verify the identities and signatures of everyone involved. A notary can also confirm that each party is signing the agreement voluntarily and that everyone understands the content of the agreement, which can help avoid future disputes.

It’s not compulsory to have a Trademark Assignment notarized, but it could be valuable, since a notary seal adds a layer of protection and credibility to the document.

Consider if online notarization would help make the notary process more accessible. Our Online Notary service is available and legal in all 50 states.